SOLICITATIONADVERTISEMENTSCLASSIFIED TELEPHONE OR CITY
DIRECTORYLISTING AS SPECIALISTPATENT ATTORNEYA registered U.
S. Patent Attorney may list himself as a Patent Attorney in the classified or city
directory or in any other manner permitted by pertinent patent regulations, if he limits
his practice to the scope of his license from the U. S. Patent Office; but the Registered
U. S. Patent Attorney who also practices law under or by reason of his Texas license may
not list himself or his qualifications on letterheads or in a telephone directory or in
any other wag forbidden to other Texas lawyers. Except as provided in Canons 39 and 42 and
the pertinent interpretative opinions, the fact that the scope of one's practice is
influenced by the existence of a limited- license from another source such as the U. S.
Patent Office is immaterial and may not be used as the basis of any direct or indirect
solicitation or advertisement.

In the case of Free v Bland, 92 S.Ct. 1089, 369 U.S. 663; which arose from Texas
courts, the Supreme Court of the United States wrote that ". . . a state's
acknowledged power, which interferes with or is contrary to federal law, must yield,"
citing Gibbons v. Ogden, 9 Wheat 1, and concluded that a federal administrative regulation
promulgated pursuant to statute "is a federal law which must prevail if it conflicts
with state law."

In Sperry v. Florida, 83 S. Ct 1322 (1963), Gibbons v. Ogden was again
cited by the United States Supreme Court and it was noted that "Congress has provided
that Commissioner of Patents 'may prescribe regulations governing the recognition and
conduct of agents, attorneys, or other persons representing applicants or other parties
before the Patent Office '."

Patent Office Rule 345 was promulgated in August, 1957 (22 F.R. 6898) pursuant to
statutory authority granted the Commissioner of Patents under Title 35 of the United
States Code, and although Rule 345(a) prohibits advertising and solicitation, Rule 345(b)
specifically states for those registered to practice before the United States Patent
Office, such as Patent Attorney, that:

"(b) The use of simple professional letterheads, calling cards, or office signs,
simple announcements necessitated by opening of office change of association, or change of
address; distributed to clients and friends, and insertion of listings in common form (not
display) in classified telephone or city directory and listings of professional cards with
biographical data in standard professional directories shall not be considered a violation
of this rule."

(1) The question is raised whether Registered U. S. Patent Attorneys who are members of
the Texas bar may also list themselves as Patent Attorneys in the classified telephone or
city directory; especially as Opinion No. 127 of March,
1956 (issued prior to these decisions), seem to permit a choice of a single listing in the
classified directories, and to deprive a listing under Attorney would seem to be an
exactment of condition contrary to the spirit of the Free decision.

(2) The other question raised is whether the specialized profession of Registered
Patent Attorney may be indicated on letterheads calling cards and office signs to indicate
that attorney's federally recognized and permitted notice of specialization; such seems to
be consistent with Opinion 52 of May, 1952.

Therefore, it would appear that opinions interpreting or modifying the Texas canons to
the extent that these canons are in no way intended to contravene the decisions of the
United States Supreme Court or to interfere with or be contrary to federal regulations,
seem appropriate and it would be appreciated if the Texas Professional Ethics Committee
could clarify these areas.

Opinion

The basic pattern of regulation of law practice is one of state license permitting one
generally to practice law. The States exact, as a condition to practice of law, a showing
by an applicant for a license that he is of good moral character and possessed of a
sufficient minimum knowledge and understanding of a broad range of legal principles. This
control of law practice is not for the purpose of creating a specially privileged and
protected class but rather it is for the purpose of affording protection to the legal
rights of all persons by assuring that they will receive legal advice and legal
representation only from those proven to be generally qualified.

All attempts to define the practice of law (or the unauthorized practice of law) solely
with regard to whether legal principles are known or used, are predestined for failure;
for today every businessman must know and use some law, and some businessmen (e.g., title
abstractors, insurance agents, insurance adjustors, tax accountants, labor negotiators)
must have and use a rather specialized knowledge of certain limited areas of law. Where
one not licensed as a lawyer is performing for another work requiring knowledge of some
area of law he usually will be regulated by the state to the extent necessary to protect
the public. If his work is of such nature that he should have a firm grasp of legal
principles, or if his work is such that it should be done for another only by one who is
held to the ethical standards of a lawyer, no regulation satisfactorily protects the
public except the requirement that this work be done only by a licensed lawyer, and in
those situations it usually will be held to be the unauthorized or illegal practice of law
for one not so licensed to do the work, and this is particularly true if lawyers are
regularly available to do the work at reasonable prices.

Ethical standards are imposed, largely by the Canons of Ethics, upon lawyers. They are
imposed to protect the public; usually it can readily be seen that the canon's protection
is direct, although sometimes it is also indirect as when a standard is imposed to
increase the dignity of the profession so as to increase the public's respect for law and
order and the courts (of which the lawyer is an important officer), or when it is imposed
to protect the lawyer against the competition of an unlicensed person who should not be
permitted to act for another in a certain area of work but against whom the lawyer cannot
compete except by lowering the quality of his work or by misleading clients by giving
unfounded bold assurances of success in order to secure the legal business or by violating
other standards that were promulgated to protect the public.

The unusual pattern of regulation of law practice is that of a limited license to
practice in a limited area of law. This is seldom found on a state level because the
states tend to hold that the courts have inherent power to regulate the practice of law,
and courts tend to look with disfavor on limited licenses because the complex interplay of
legal principles is such that it is reasonable to think one cannot be well qualified even
as a limited-class lawyer unless he is or has been a general practitioner or lawyer. The
limited-license is a creature of the legislature and of the executive branch and indeed is
rarely encountered except in the federal system. The license to practice before the Patent
Office creates a limited-lawyer of this sort; he is called a Patent Attorney if he
coincidentally is a lawyer generally licensed by a state and a Patent Agent if he is not.
There are dozens of limited- licensing agencies in the federal system. The Patent Office
today appears to be trying to hold its limited licensees or "limited lawyers" to
ethical standards generally prevailing in the state systems.

The limited-lawyer created by the Patent Office necessarily is permitted not only to
perform the limited-area law practice he is licensed to do, but to hold himself out to the
public as being authorized to perform these acts, and this is the gist of the Sperry
decision. He cannot hold himself out as a general lawyer, for this is not the scope of his
limited license, so he must and does hold himself out as a Patent Lawyer or under some
similar designation which does not misrepresent the scope of his limited license.

It seems to follow that the holder of this limited license may hold himself out in
whatever manner the Patent Office permits and which does not mislead the public as to the
scope of his limited license - by use of letterheads, calling cards, office signs,
announcement cards, telephone directory listings, etc.

For several reasons not necessary to reiterate now, Texas has seen fit (Canon 24) to prohibit all solicitation, direct or
indirect, of legal business by holding one's self out as having special talents or
qualifications of any sort (except as provided in Canons
39 and 42 ). One reason is that Texas has not yet
set up any licensing control over attempted specialization by its general-license
practitioners. This does not mean that the limited-license, federal practitioner of one
sort or another cannot carry on his limited practice and hold himself out as so doing to
the extent permitted by his limited license; on the contrary, he can, without interference
from the state.

Thus the one who holds both a limited license from a federal agency and a general
license from the State of Texas has no problem if he limits his practice to the scope of
his limited license. (He might be wise to indicate clearly on any letterheads, etc., that
do not conform to state ethical requirements that he is limiting his practice to the scope
of. his limited lincense.) But if he wishes to practice under his general state license,
he must conform to state standards and this means that all "specialists' are handled
as general practitioners (Canon 41) and that as a
Texas lawyer he cannot hold himself out by means of letterheads, calling cards office
sign, etc., as having any special talents or qualifications. (See Opinions 127, 190, 192, 198, 199, 200, 222, 249 and 250.)
This in no way intrudes upon his limited license, if because of his limited license he may
perform acts which would also be the practice of law if performed by a generally licensed
lawyer, he obviously may perform those acts while limiting his practice to the scope of
his limited license, for the reason that those acts are within the scope of his limited
license. And if the acts he desires to perform are not within the scope of his limited
license but are within the scope of his general state license, the fact he has the limited
federal license is immaterial and his limited license is not intruded upon by a
requirement that he conform to the ethical standards required by his state license before
he performs acts within the scope of his general state license and without the scope of
his limited federal license. Any other view would necessarily open the gates to all state
lawyers to make representations about various special talents and qualifications they
might profess to have, which would lessen the protection now given the public because it
would encourage the public to select lawyers on the basis (rather than of legal ability
and skill ) of imaginary qualifications or of real qualifications which were either
immaterial to the matter at hand or were cleverly puffed up and exaggerated.

It follows that the questions are to be answered as follows: (1) A Registered U. S.
Patent Attorney may list himself as a Patent Attorney in the classified or city directory
or in any other manner permitted by pertinent patent regulations, if he limits his
practice to the scope of his license from the U. S. Patent Office; but the Registered U.
S. Patent Attorney who also practices law under or by reason of his Texas license may not
list himself or his qualifications on letterheads or in a telephone directory or in any
other way forbidden to other Texas lawyers. (2) Except as provided in Canons 39 and 42 and
the pertinent interpretative opinions the fact that the scope of practice of a Texas
lawyer is influenced by the existence of a limited-license from another source is
immaterial and may not be used as the basis of any direct or indirect solicitation or
advertisement. (8-1)